E(instein) = M(arks) C(onsent) for squares

The IPKat brings news of a decision on consent from the UK Trade Marks Registry.

Continental Shelf 128 (Shelf) was the assignee of the UK word mark for EINSTEIN, registered for ‘articles of clothing included in Class 25’. The Hebrew University of Jerusalem (the University) applied to have the mark revoked under s.46(1)(b) of the Trade Marks Act 1994 (TMA), arguing that it had not been used during the five-year period of 19 July 1999 and 19 July 2004. If some use could be shown during that period, the University argued that the mark should be restricted in accordance with s.46(5) of the TMA.

Shelf filed evidence purporting to demonstrate genuine use. This consisted of four invoices which emanated from a company called Hornby and were addressed to a company named Jeevika International Limited. The invoices concerned men’s polo shirts, shorts, roll-neck jumpers and long-sleeved T-shirts which bore the word EINSTEIN with the first letter written over a square in a contrasting shade or colour. Sewn-in labels and swing-tags were also exhibited. In his witness statement, the sales executive of Hornby Street Limited stated that Hornby was a sister company of Shelf, and had used the EINSTEIN marks with the consent of Shelf.

Albert Einstein gives his considered opinion of EU trade mark law

The application for revocation was allowed:

*The correct question when establishing the presence of consent is not whether the trade mark has been used against the wishes of the proprietor. If it were, acquiescence would become synonymous with consent. Under s.100 of the TMA, the onus of proving such consent is on the mark’s owner. Evidence of such consent must be properly made out and cannot be left to probabilities or suppositions. Here there was a statement that Shelf and Hornby were sister companies, but there was no evidence of this or explanation of what it meant. Accepting such a statement was as proof of consent would put a premium on not putting in any evidence. As a result, Shelf’s supposed consent to Hornby’s use of the EINSTEIN mark was not made out.

*Even if Shelf had consented to Hornby’s use of the EINSTEIN mark, it was not clear that consent alone without control of Hornby’s activities (the ‘bare licence approach’) would be sufficient to maintain the registration on the register. Although Art.10(3) of Directive 89/104 states that use of a mark with the consent of its proprietor is deemed to constitute use by the proprietor himself, following Heidelberger Bauchemie, Directive 89/104 must be read in so far as is possible in the light of the TRIPs Agreement. Art.19(2) of TRIPs states that use of a trade mark by a third party must be recognised as use of the trade mark for the purpose of maintaining the registration where the use by the third party is subject to the control of the trade mark owner. This emphasis on ‘control’ is also apparent in the French and Castellano versions of that article.

*Additionally, recognising use with the consent of, but without the control of, the trade mark owner as sufficient to maintain registration would be inconsistent with the essential function of a trade mark which, inter alia, offers a guarantee that ‘all the goods or services bearing it [the mark] have been manufactured or supplied under the control of a single undertaking which is responsible for their quality’.

*In this case, there was nothing to suggest that Shelf had exercised any control over Hornby’s use of the EINSTEIN mark, making the case for maintaining registration even weaker.

*In the event that the hearing officer was wrong on the non-use point, he held that the registration should be limited to ‘casual outer clothing for men in Class 25’.

The IPKat reckons that the hearing officer is right – lack of objections certainly can’t be equated with consent. What’s more interesting to him though is the way that the control issue has been dealt with. For one thing, it’s pretty rare to have recourse to the TRIPs Agreement in domestic trade mark proceedings. If such recourse is necessary, can the matter really be considered to be acte clair? Control is one of those tricky topics that pops up in various places in trade mark law (take a look at Mastercigars v Hunter & Frankau - which the IPKat will be reporting on later), but which hasn’t been defined yet by the ECJ. More generally, consent as a concept appears a number of times within Directive 89/104. Here the hearing officer has read the term by reference to the essential function of a trade mark, but must such an approach be taken in all circumstances in which the term ‘consent’ is used? For example, the Directive allows a mark-owner to consent to the registration of a mark which would otherwise conflict with his mark under the relative grounds. This has the potential to give consumers a false message about origin and control – should the concept of ‘consent’ also be read restrictively in these circumstances too?